Picture the scene. You have been conducting research on communications skills for medical professionals for several decades. You have trained nurses in communication skills and written training materials for them. You own the copyright in these materials, some of which are based on the contents of your PhD. You are also a published co-author of an Oxford University Press book for healthcare professionals, and are or were an honorary senior lecturer at the Royal Free Hospital in London.

You are asked to participate in a joint bid to write training materials on the subject of communication skills in relation to the treatment of cancer patients. These materials are to be used nationally by the UK National Health Service (“NHS”). You are happy for the copyright in these materials to belong to the NHS, provided you do not lose ownership to your pre-existing intellectual property (“IP”).

The NHS project continues over several years, originally by way of contracts between the NHS body concerned and two well-known cancer research charities (one of which engages you as a subcontractor). After a few years, the cancer charities decide to drop out, and the project continues with the key researchers. The NHS provides annually-renewable “service level agreements” (“SLA”) for you and the other individual researchers to sign. You are not a lawyer, but you raise your concern about your pre-existing IP each time a contract is negotiated.

The training materials that are eventually developed for the NHS contain some of your pre-existing materials – not to a huge extent, but enough for a dispute over copyright to arise. The dispute arises partly because the NHS licenses the training materials for use in other countries, and this results in the NHS being a competitor in relation to your body of training materials. You consider that the NHS has a licence to use your pre-existing materials to the extent they have been incorporated into the NHS materials, but only for use in the NHS – not for use in a profit-making enterprise.

The parties are unable to resolve their differences, and litigation results. In the run-up to the litigation, the NHS asserts that it owns the copyright in your pre-existing materials, which must be alarming to you. Once the matter reaches court, the NHS’s counsel does not seem to go quite so far.

The key provision in the most recent contract with you reads as follows:

All intellectual property rights associated with any intellectual property arising from the performance of the Services and the documents and other work prepared by the Consultant pursuant to this Agreement shall belong to [the NHS].

What did you say, Sweep? The drafter should be shot for incompetence? That’s a bit harsh, Sweep!

What does this clause mean? Does the phrase “intellectual property rights associated with…” sweep up your pre-existing IP? Counsel for the NHS makes some, frankly, confusing submissions which appear to argue that your IP transfers to the NHS but you are free to exploit your original version of the materials that are protected by that IP, because the original version doesn’t infringe the NHS version.

The judge in the case, His Honour Colin Birss QC, considers that the above clause does not have this meaning. Instead, he prefers your view that the NHS has merely a licence to your pre-existing IP. But what is the scope of this licence?

Judge Birss decides that the implied licence must be irrevocable and royalty-free, assignable (with the NHS body’s copyright) and when the NHS body licenses its copyright (eg to health authorities in other countries), a sub-licence of your copyright must go along with it.

Not the Judgment of Colin

So you don’t entirely win, because you can’t stop the NHS from licensing to others. But you don’t entirely lose either, because you retain ownership of your pre-existing IP and the right to exploit it.

And it all comes down to the interpretation of a really unclear IP ownership clause in the contract.

The case, for those of you who want to read the judgment, is called Wilkinson v London Strategic Health Authority [2012] EWPCC 48 . It was heard in the Patents County Court, and reported last week. The case report can be found here.

I’m sure they wrote about…

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